Ex Parte Lins

Board of Patent Appeals and Interferences

Sep 3, 2009

09766730 (B.P.A.I. Sep. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CLAUDIO L.K. LINS
____________

Appeal 2009-004510
Application 09/766,730
Technology Center 1700
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Decided: September 03, 2009
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
ADRIENE LEPIANE HANLON, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-5, 9-15, 17, 26
and 27. The Examiner has withdrawn the final rejection of claims 6-8, 16,
and 18-25. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:

1. A substantially non-aqueous electrostatically dispensable
Appeal 2009-004510
Application 09/766,730

disinfectant composition comprising an alcohol solvent component in
combination with a glycol solute component, said combination having an
initial conductivity, and further comprising a conductivity control
component comprising at least one of a silicon oil, an essential oil, a fatty
acid ester and combinations thereof in an amount sufficient to reduce said
initial conductivity, and wherein all composition components of the
disinfectant composition for electrostatic dispensing are at least one of
soluble and miscible.

The Examiner relies upon the following references in the rejection of
the appealed claims (Ans. 3):
Peltier 5,382,410 Jan. 17, 1995
Schroeder 5,591,395 Jan. 07, 1997
Rabe 6,531,142 B1 Mar. 11, 2003

Appellant’s claimed invention is directed to an electrostatically
dispensable disinfectant composition, as well as a system and method for
using the composition. The composition comprises an alcohol solvent, a
glycol solute, and a material for reducing initial conductivity, such as a
silicon oil. All the components of the composition are either soluble or
miscible in the solvent.
Appealed claims 1-5, 9, 11-13, 15 and 17 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Rabe. Claims 10 and 14 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Rabe in view
of Schroeder. Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rabe in view of Peltier.
We will not sustain the Examiner’s § 102 rejection of claims 1-5, 9,
11 and 12 over Rabe. These claims require that all the components of the
disinfectant composition are soluble and miscible (claim 1), or, stated
otherwise, the composition is free of immiscible and insoluble components
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Application 09/766,730

(claim 9). Rabe, on the other hand, discloses an electrostatically-sprayable
composition that must include from about 0.1% to about 35% of a
particulate material that is insoluble and immiscible in the composition (see
abstract, col. 3, ll. 29-30, col. 6, ll. 21-25). To support the rejection, the
Examiner cites Rabe’s disclosure that “[a]s will be apparent for the skilled
practitioner all combinations of such embodiments and features are possible
and can result in preferred executions of the invention” (col. 2, ll. 56-59).
However, we are in full agreement with Appellant that such disclosure
cannot reasonably be interpreted as teaching a composition that does not
contain one of the four recited components, namely, component (c) which is
an insoluble or immiscible particulate material. The Examiner also points to
Rabe’s disclosure that “[t]he liquid insulating materials and conductive
materials present in the composition are sufficiently miscible or soluble in
the composition such that they are in substantially, preferably essentially,
one phase” (col. 3, ll. 34-37). The Examiner does not explain, however, how
this disclosure regarding components (a) and (b) has any relevance to the
absence of component (c) in the composition.
We will sustain the Examiner’s § 102 rejection of claims 13, 15, and
17 over Rabe. These claims do not require that the components of the
composition are free of immiscible and insoluble components. Appellant
maintains, however, that the electrostatic delivery system of Rabe does not
comprise an electrostatic wick or vaporizing emitter that dispenses the
composition in vapor and/or aerosol suspension form. However, we concur
with the Examiner that the electrostatic system of Rabe, which forms an
atomized spray of electrically charged droplets, may be fairly considered a
vaporizing emitter that dispenses the composition in an aerosol suspension
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Application 09/766,730

form. Appellant has not refuted the Examiner’s finding that the definition of
an aerosol includes charged droplets suspended in a gas.
We will not sustain § 103 rejection of claim 10 since it is dependent
on claim 9 which requires that the composition be free of immiscible and
insoluble components. The Examiner has not explained why it would have
been obvious to remove the particulate material from the Rabe composition.
We will sustain the § 103 rejection of claim 14. We concur with the
Examiner that it would have been obvious for one of ordinary skill in the art
to resort to routine experimentation to determine the optimum concentration
and amount of disinfectant, particularly since Appellant does not refute the
Examiner’s finding that “Schroeder teaches that the composition causes a
reduction of 3-log in the airborne microbial levels” (Ans. 7, second para.).
We will also sustain the Examiner’s § 103 rejection of claims 26 and
27 over Rabe in view of Peltier. Appellant does not dispute the Examiner’s
factual determination that Peltier discloses an electrostatically dispensing
system without a spray nozzle (claim 27), and placing the device within an
air duct of a central air handling system (claim 26). Appellant contends that
modifying the device of Rabe in accordance with Peltier, such that it does
not include a spray nozzle and no longer sprays the composition onto the
skin of a person, renders Rabe unsatisfactory for its intended purpose.
However, this argument misses the thrust of the Examiner’s rejection.
Appellant has not rebutted the Examiner’s position that it would have been
obvious for one of ordinary skill in the art to provide the composition of
Rabe into the apparatus of Peltier (see Ans. 11).
As a final point, we note that Appellant bases no argument upon
objective of non-obviousness, such as unexpected results.
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In conclusion, based on the foregoing, the Examiner’s § 102 rejection
of claims 1-5, 9, 11 and 12 is reversed, and the § 102 rejection of claims 13,
15, and 17 is sustained. The Examiner’s § 103 rejection of claim 10 is
reversed, whereas the § 103 rejection of claims 14, 26, and 27 is sustained.
Accordingly, the Examiner’s decision rejecting the appealed claims is
affirmed-in-part.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED-IN-PART

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